A common misunderstanding about trademark law involves what is actually necessary in order to “own” a trademark. There are a number of requirements that many companies miss if the company doesn’t do its research or hire an attorney. In fact, a company can file an application to register a mark and obtain a registration, but then when a dispute arises, find out that its application will be cancelled for failure to comply with the necessary rules. The Trademark Trial and Appeal Board (“TTAB”) recently provided us all with a cautionary example of what can happen with respect to failing to follow the rules for certain types of applications.
In the United States, merely “filing” to register a trademark is insufficient, even if nobody else has rights in that mark. In order for a mark to be valid, the owner must have used the mark in commerce and, in order to obtain a federal registration, the mark must be used in interstate commerce. Nearly thirty years ago, the rules for obtaining a registration were modified slightly to allow applications to register marks based upon the intent to use a trademark in the future, instead of the previous rule requiring actual use in interstate commerce. This is commonly referred to as an Intent-to-Use (“ITU”) application.
In some ways, an ITU application allows a company to “reserve” rights in a trademark before it begins using the mark. A primary benefit of the ITU application is that it allows the Trademark Office to review the application before the applicant has invested significant money in packaging, marketing, and other items. If the Trademark Office rejects the application, the applicant may save money by avoiding the cost of rebranding the product or redeveloping marketing materials.
However, applicants without the advice of an attorney often don’t realize that, to be valid, an ITU application requires the applicant to have a “bona fide intention . . . to use a trademark in commerce” at the time the application was filed. 15 USC 1051(b). An applicant cannot just file an application because it has an idea for a trademark, or because the applicant thinks it would be a good name.
The applicant in The Trustees of the Bonnie Cashin Foundation v. Lake recently discovered this requirement the hard way. There the applicant applied to register the mark BONNIE CASHIN in connection with various handbags and clothing items. Bonnie Cashin (shown below) was a well known fashion designer.
Unfortunately for the applicant, the TTAB granted a Motion for Summary Judgment finding that the applicant lacked a bona fide intention to use the mark on the filing date of the application and denied registration of the application (decision available here).
So how do you prove that you have a bona fide intent to use a mark? Documentary evidence goes a long way, such as marketing plans, product development, contacting manufacturers or retailers, etc. can all help establish a bona fide intent to use. On the other hand, if there is no documentary evidence , then this can be sufficient to establish that the applicant lacked a bona fide intent to use, unless the applicant can identify other facts that demonstrate this bona fide intent.
However, the only steps the applicant had taken to use the mark in commerce consisted of (1) filing the trademark application; (2) writing a book about her relationship with Bonnie Cashin; (3) promoted and discussed her relationship with Ms. Cashin in the press; and (4) while an employee of the Bonnie Cashin Foundation, promoted and marketed the Foundation.
The TTAB rejected this evidence as insufficient. None of the evidence demonstrated commercial steps to use the mark in commerce in connection with handbags or clothing items. The book and accompanying also did not occur until 2016, more than 4 years after the filing date of the application. Although the TTAB will consider evidence that occurs after the filing date, here the gap in time was too long for the TTAB to consider it credible, notwithstanding the other deficiencies. The TTAB also determined that the applicant’s work on behalf of the Foundation was irrelevant as the actions were taken on behalf of the Foundation. Accordingly, the TTAB granted the opposition and refused registration of the application.
So if you are considering filing an application, or assisting a client with filing an application, take a moment before submitting to evaluate whether your client has a bona fide intent to use the trademark. Identify the facts that support this bona fide intent and confirm that, if necessary, there would be some documentary evidence to support these facts. Doing a little work up front can help you avoid losing your registration and avoid the time and cost of an opposition or cancellation proceeding.